E-TIPS

On January 4, 2023, the Federal Court of Canada (the Court) issued its decision in GNR Travel Centre Ltd v CWI, Inc, 2023 FC 2, dismissing two appeals in consolidated proceedings and affirming the Trademarks Opposition Board’s (the Board) decision. The Court confirmed that a retailer’s trademark permanently affixed to goods manufactured by a third party constitutes “use” of the retailer’s trademark on the goods within the meaning of the Trademarks Act (the Act).

On December 21, 2022, BetMGM, a sports betting company, announced that its customers’ personal information had been obtained in an unauthorized manner. In its “Notice Regarding Patron Personal Information”, BetMGM revealed that it learned of the data breach on November 28, 2022 and believes that the breach occurred in May 2022.

Thank you for your readership over the last year and welcome to what we hope will be an exciting 2023!  In this year’s first issue of the E-TIPS® Newsletter, we will recap our most noteworthy reports from 2022, covering developments in intellectual property (IP) and information technology (IT) law under the following categories: (1) “Supreme Court of Canada Matters”, (2) “Legislative, Treaty and Policy Developments”, (3) “Patents and Industrial Designs”, (4) “Trademarks”, (5) “Copyright”, (6) “Privacy and Cybersecurity”, and (7) “Legal Developments in Emerging Technology Around the World”.

On November 17, 2022, an Order in Council, was published to fix December 30, 2022 as the day on which Division 16 of Part 5 of the Budget Implementation Act (the Act) comes into force. This will amend the Copyright Act, extending the term of copyright protection in literary, dramatic, musical, artistic works and certain works of joint authorship and posthumous works to 70 years after the life of the author, as previously reported by the E-TIPS® Newsletter here.

On November 3, 2022, the Supreme Court of British Columbia (the Court) in Ding v GSV Futures Inc., 2022 BCSC 1921, granted judgement in favour of Bei Ding (the Plaintiff) against GSV Futures Inc. (the Defendant), awarding the Canadian dollar equivalent of 6.1 bitcoins and 47.70 bitcoins as liquidated damages.

On December 5, 2022, the Federal Court of Appeal of Canada (FCA) issued its decision in Innovative Medicines Canada v Canada (Attorney General), 2022 FCA 210, where it affirmed the validity of the government’s new list of comparator countries, which the Patented Medicine Prices Review Board (the Board) is to consider in determining whether the price of a patented drug is “excessive”.

On November 25, 2022, the Ontario Court of Appeal (the Court) released a trilogy of decisions, bringing clarity as to whether the tort of intrusion upon seclusion is a viable cause of action against entities who collect personal information for commercial purposes and suffer an external, third-party cyberattack. In the leading case, Owsianik v Equifax Canada Co., 2022 ONCA 813 (Owsianik; previously reported on by the E-TIPS® Newsletter here), the Court unanimously held that the tort of intrusion upon seclusion was not a viable cause of action against a defendant who fell victim to a cyberattack, nor could such a claim arise on the basis of the defendant’s alleged failure to prevent the cyberattack.

On November 18, 2022, the Supreme Court of Canada (SCC) issued its decision in Nova Chemicals Corp. v Dow Chemical Co., 2022 SCC 43, in which an eight to one majority affirmed the award of nearly $645 million and clarified the test for an accounting of profits. The SCC also confirmed that springboard profits are legally permissible, and should be included in an accounting of profits because they are also causally attributable to infringement of the invention.

On November 21, 2022, the Canadian Intellectual Property Office (CIPO) launched a public consultation on proposed amendments to the Trademarks Regulations (the Proposed Regulations), and draft practice notices. The Proposed Regulations and draft practice notices will implement changes that were made to the Trademarks Act in 2018, which granted the Registrar of Trademarks (the Registrar) the authority to award costs, grant confidentiality orders, and practice case management in opposition, objection and non-use cancellation (section 45) proceedings.

On November 16, 2022, the Office of the Superintendent of Financial Institutions (OSFI), the Financial Consumer Agency of Canada (FCAC), and the Canada Deposit Insurance Corporation (CDIC) (collectively, the Federal Agencies) released a joint statement (the Statement) addressed to federally regulated entities involved in crypto-asset activities or crypto-related services. The Statement reinforces the Federal Agencies’ expectations that regulated entities should adhere to applicable regulatory requirements and guidance when engaging in the crypto space.

On November 10, 2022, the Federal Court of Appeal of Canada (FCA) in Canada (Attorney General) v Benjamin Moore & Co., 2022 FCA 194, dismissed Benjamin Moore & Co.’s (Benjamin Moore’s) motion to strike an appeal filed by the Attorney General of Canada (AGC) from a decision of the Federal Court (FC) concerning the proper legal test for assessing patentable subject matter for computer-implemented inventions.

In November 2022, the Rome Court of First Instance (the Court) reported its July 19, 2022 decision in Juventus F.C. v Blockeras s.r.l., No. 32072/2022, granting Juventus Football Club s.p.a. (Juventus) a preliminary injunction enjoining Blockeras s.r.l. (Blockeras) from producing, marketing, promoting, or selling its non-fungible tokens (NFTs) bearing Juventus’ trademarks. The preliminary injunction order was recently finalized in lieu of an appeal.

On October 21, 2022, the Federal Court of Canada (the Court) issued its decision in Crocs Canada, Inc. v Double Diamond Distribution Ltd, 2022 FC 1443, finding that Double Diamond Distribution Ltd (Double Diamond) infringed Canadian Industrial Design Number 120939 (939 Design) owned by Crocs Canada, Inc. (Crocs Canada). The Court also dismissed Double Diamond’s counterclaim for invalidity.

On November 1, 2022, the Federal Court of Appeal of Canada (FCA) issued its decision in Janssen Inc. v Apotex Inc., 2022 FCA 184, dismissing the appeals relating to the decision of the Federal Court finding Canadian Patent No. 2,661,422 (the 422 Patent) invalid for obviousness.

On November 2, 2022, the Ontario Superior Court of Justice (the Court) issued its decision in 2788610 Ontario Inc. v Bhagwani, 2022 ONSC 6098, ordering that the interlocutory injunction previously granted by the Court be vacated.

On October 28, 2022, in Clark Wilson LLP v 7299362 Canada Inc., 2022 FC 1478, the Federal Court (the Court) granted an appeal brought by Clark Wilson LLP (the Applicant, acting as trademark agent to Amazon Technologies, Inc.) of a Trademarks Opposition Board (TMOB) decision that upheld the Respondent’s, 7299362 Canada Inc., registration for the trademark ALEXA TRANSLATIONS (the Mark).

On October 28, 2022, the Office of the Privacy Commissioner of Canada (the OPC) announced that data protection authorities around the world endorsed resolutions on facial recognition technology (FRT) and cybersecurity at the 44th Global Privacy Assembly (GPA) in Istanbul, Türkiye.

On October 21, 2022, the Federal Court of Canada (the Court) in Bell Media Inc. v. John Doe 1, 2022 FC 1432, issued a dynamic site blocking Order requiring Third Party Respondent internet service providers (ISPs) to block or attempt to block access to streaming servers that provide unauthorized streams of Fédération Internationale de Football Association (FIFA) World Cup Qatar 2022 matches.

On October 21, 2022, the High Court of the Republic of Singapore (the Court) issued its reasons in Janesh s/o Rajkumar v Unknown Person (“CHEFPIERRE”), [2022] SGHC 264, explaining its decision in May 2022 to grant an injunction to prevent any potential sale of the non-fungible token (NFT) in issue and finding that NFTs are a form of property.

On October 6, 2022, the Privacy Commissioner of Canada (the Commissioner) issued a statement concerning a new report from the Standing Committee on Access to Information, Privacy and Ethics (the Committee), following its study on the use and impact of facial recognition technology (FRT) and Artificial Intelligence (AI).